Recent Case Notes & Commentary

Impersonation of trademark owner and defamation not legitimate uses of domain names

McGuireWoods LLP v. Bobby Jones

FORUM Claim Number: FA1911001871096

December 11th 2019

What counts as a legitimate interest in a domain name? The question often arises but the many different purposes of domain names and circumstances of their use make it impossible to come up with an exhaustive list of uses that are legitimate.

Once the Complainant has established a prima facie case against the Respondent, the Respondent then has the burden of showing that their use of the domain name amounts to either a bona fide offering of goods or services, a legitimate non-commercial or fair use (see paragraph 4(c)(iii)) or a use that was legitimate on some other ground. The case of McGuire Woods LLP v Bobby Jones provides clear examples of what falls outside the scope of legitimate use.

McGuire Woods is a law firm in the US and Europe. Two of the three domain names at issue (<> and <>) were used by Bobby Jones to redirect web traffic to advertisements for competing law firms. That was clearly illegitimate, because they were promoting rival law firms, as had been the case with a previous claim by the same firm against a different registrant McGuireWoods LLP v. Mykhailo Loginov (2015). In that case, the panel had said:

“The Panel finds Respondent’s use of the disputed domain names to feature parked hyperlinks containing links in competition with Complainant’s legal services is not a bona fide offering of goods or services pursuant to Policy”.

The third domain name, <>, was trickier because the website to which it was linked contained material accusing the Complainant of fraudulent business practices. Was this website therefore protected free speech by reason of the First Amendment to the US Constitution? The panel held (and it was not the first time a panel had ruled like this) that the contents of the site was protected, but the domain name itself was not. Why so? Well, this domain name meant that the firm’s trademark (mcguirewoods) was incorporated in the domain name which therefore impersonated the firm. It might seem odd, but the domain name was illegitimate and was thus transferred to the complaint, not because the website said nasty things about the firm, (which turned out to be irrelevant) but because the domain name itself had impersonated the firm and there was nothing in the domain name to show that it was not impersonating the complainant. Get it?